Working with the USPTO system: techniques for writing a patent application

When a patent drafter crafts the disclosure (the specification and drawings) in a patent application, there are techniques that can be used to position the application in the best possible way to overcome (and avoid) some of the most common Examiner rejections. It is no secret that Examiners read little more than the claims when examining the application. Time allocations for patent review are inadequate to do a quality review, so most Examiners do their best to produce a response within a given timeframe. Since you can’t fight the system, you need to know how to work within it and find techniques that minimize the issues encountered.

It is useful to define all claim terms right in the claims. Avoid the Examiner having to find the definition in the specification and keep his attention focused on the claims review. The momentum is lost when the Examiner has to put one document down to look back at another document. If there are fuzzy terms like “substantially in the claim,” avoid Section 112 rejections (for lack of clarity) by defining these claim terms in the specification. For example, you may want to use language right in the claims like: “as used in this specification, substantially means a deviation of 10% above or below the value.”

It is often advantageous to have a definition section at the beginning of the detailed description as an easily identifiable reference section. In patent applications drafted by our team we often label it “Definitions of terms used in this specification and claims.”

In some cases, the application will not be approved with the proposed claim terminology. For this reason, it is wise to have a back-up plan. Use alternate wording to describe the novel inventive concept in the specification, giving you the ability to reward claims during prosecution to overcome objections and rejections by the Examiner. When drafting the detailed description of a preferred embodiment, you can avoid boxing yourself in with language like “may,” “in another embodiment,” and “in an exemplary or illustrative embodiment.” Liberal discussion of several variations of the invention (embodiments) in the disclosure will provide wiggle room to amend the claims to overcome prior art raised by the Examiner.

The background section is advantageously used to discuss prior art. In applications drafted by our patent team, we go a step further and include a section entitled “specific advantages of the invention” where we explain the novelty of each feature and how it differs from the prior art. This has helped bring the Examiner’s focus onto the inventive concept. This particularly advantageous section is similar to the PCT section for “industrial applicability” and can be readily converted if the U.S. application is filed internationally.

Writing a patent application can be like shooting in the dark because you can never be certain how an Examiner will view your claims and the way in which you have presented the information. Including portions that can help during prosecution are invaluable later in the process, increasing chances of a patent grant being awarded to the applicant.